DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-6 are pending.
Claims 1-6 are examined herein.
The previous objections to claims 1-5 have been withdrawn in view of Applicant’s amendments to the claims.
The previous rejection to claim 5 under 35 USC 112(b) has been withdrawn in view of Applicant’s amendment to the claim.
Claims 1-6 are rejected.
Priority
Application No. 19/177,446 filed on 04/11/2025 claims foreign priority to Chinese application No. CN202410436173.1 filed on 04/11/2024.
A certified English translation of the foreign priority document has been filed (see FR TRANS document dated 05/27/2026).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Stewart (WO-2015168121-A1), Lu (Lu, A., Diehn, S., & Cigan, M. (2015). Maize protein expression. Recent advancements in gene expression and enabling technologies in crop plants, 3-40), and Kang (Kang, M., Lee, K., Finley, T., Chappell, H., Veena, V., & Wang, K. (2022). An improved Agrobacterium-mediated transformation and genome-editing method for maize inbred B104 using a ternary vector system and immature embryos. Frontiers in Plant Science, 13, 860971).
This is a modified rejection from the previous rejection set forth in the Office Action dated 03/06/2026.
Claim 1 is drawn to a method for increasing iron content in maize, comprising: overexpressing a ZmCCD8 gene in maize plants through breeding to increase iron content in maize leaves and/or kernels, wherein the ZmCCD8 gene has a nucleotide sequence as shown in SEQ ID NO: 1.
Claim 2 is drawn to the method of claim 1, wherein the ZmCCD8 gene encodes a protein having an amino acid sequence as shown in SEQ ID NO: 2.
Claim 3 is drawn to the method of claim 1, wherein overexpressing the ZmCCD8 gene in the maize plants increases the iron content in ear leaves.
Claim 4 is drawn to the method of claim 1, wherein overexpressing the ZmCCD8 gene in the maize plants increases the iron content in kernels per ear.
Claim 5 is drawn to a method for regulating the interaction between a ZmMYB118 protein and a promoter of ZmVIT2.1, comprising: overexpressing a ZmCCD8 gene in maize plants through breeding to regulate the interaction between the ZmMYB118 protein and the promoter of ZmVIT2.1; wherein the ZmCCD8 gene has a nucleotide sequence as shown in SEQ ID NO: 1, the ZmMYB118 protein is encoded by a nucleotide sequence as shown in SEQ ID NO: 6, the promoter of ZmVIT2.1 has a nucleotide sequence as shown in SEQ ID NO: 5, and the ZmVIT2.1 has a nucleotide sequence as shown in SEQ ID NO: 7.
Claim 6 is drawn to a method for maize breeding, comprising: overexpressing a ZmCCD8 gene in maize plants to increase iron content in maize leaves and/or kernels; and obtaining a maize inbred line overexpressing the ZmCCD8 gene; wherein the ZmCCD8 gene has a nucleotide sequence as shown in SEQ ID NO: 1.
Regarding claims 1, 5, and 6, Stewart teaches overexpression of a ZmCCD8 gene in a plant expression system (claims 1, 9, and 10 of Stewart). Stewart further teaches the nucleotide sequence of the ZmCCD8 gene (SEQ ID NO: 5 of Stewart) is 100% identical to instant SEQ ID ON: 1 (claim 12 of Stewart) (see alignment below).
Regarding claim 2, Stewart teaches the ZmCCD8 gene (SEQ ID NO: 5 of Stewart) encodes a protein having an amino acid sequence that is 100% identical to instant SEQ ID ON: 2 (claim 14 of Stewart) (see alignment below).
However, Stewart does not explicitly teach:
overexpressing ZmCCD8 in maize plants through breeding (remaining limitation of claims 1 and claim 5)
wherein overexpressing the ZmCCD8 gene in the maize plants increases the iron content in ear leaves (claim 3)
wherein overexpressing the ZmCCD8 gene in the maize plants increases the iron content in kernels per ear (claim 4)
wherein ZmMYB118 protein is encoded by a nucleotide sequence as shown in SEQ ID NO: 6, the promoter of ZmVIT2.1 has a nucleotide sequence as shown in SEQ ID NO: 5, and the ZmVIT2.1 has a nucleotide sequence as shown in SEQ ID NO: 7 (claim 5)
overexpressing a ZmCCD8 gene in maize plants, and obtaining a maize inbred line overexpressing the ZmCCD8 gene (remaining limitations of claim 6)
Regarding the remaining limitations in claims 1, 5, and 6, in analogous art Lu teaches transgenic maize has been deployed as a cost effective platform for expression of recombinant proteins on an agricultural scale (p. 3, ¶1). Lu teaches several proteins with industrial or reagent-based applications have been expressed in maize due to the competitive opportunity for large-scale protein production (Table 1.2), and further elaborates on various advantages of using maize as a plant based platform for protein production (p. 8, ¶2). In other analogous art, Kang teaches maize inbred line B104 is a public and transformable inbred maize line and has been widely used in recent years for genome editing and bioengineering (abstract). Kang teaches to improve the expression of heterologous proteins in maize for recombinant protein expression platforms, a strong constitutive promoter is often used, e.g. CaMV 35S (p. 8, ¶3). Furthermore, Kang also teaches the transformed line should be self-pollinated or cross-pollinated (i.e. bred) for subsequent generation testing and analysis (p. 1, section titled T0 Seed Production).
It would therefore have been obvious to a person of ordinary skill in the art to modify the invention taught by Stewart to include the limitations of Lu and Kang to arrive at the instantly claimed method with a reasonable expectation of success because Stewart teaches overexpressing ZmCCD8 in a plant expression system, and Lu specifically teaches maize is an advantageous plant based platform for recombinant protein expression (i.e. an advantageous plant expression system), and Kang teaches the maize inbred line is public and transformable. Therefore, one of ordinary skill could have a reasonably expectation of success in overexpressing ZmCCD8 in maize plant including the inbred line B104 and self- or cross- pollinating the transgenic plant without encountering any special technical difficulties. One having ordinary skill in the art would have been motivated to combine the teachings because Lu teaches transgenic maize has been deployed as a cost effective platform for expression of recombinant proteins on an agricultural scale (p. 3, ¶1), and Kang provides improved methods of transforming the maize line of particular interest that is B104 (title, abstract, p. 2, ¶2). Additionally, the instant specification provides evidence that maize inbred line B104 comprises the ZmMYB118 protein encoded by a nucleotide sequence as shown in Zm00001d032024 from a Phytozome database (which is represented by SEQ ID NO: 6) and the promoter of ZmVIT2.1 and the gene of ZmVIT2.1 which have nucleotide sequences as shown in Zm00001d005715 from the Phytozome database (which is represented by SEQ ID NO: 5 and 7, respectively) (¶0053, 0061-0062). Therefore, the obvious plant would reasonably be expected to comprise these sequences as required by claim 5. Furthermore, the limitations of “for increasing iron content in maize” and “to increase iron content in maize leaves and/or kernels” as recited in claims 1 and 6 are merely intended uses which do not limit the claims because there is no structural difference and/or difference in method steps between the claimed invention and the obvious method of overexpressing the specified ZmCCD8 gene in maize through breeding.
Claims 3 and 4 are also obvious because the functions are inherent to the obvious sequences when overexpressed in maize. As described above, claim 1 is obvious in view of Stewart, Lu, and Kang, structurally requiring overexpressing the ZmCCD8 gene in maize plants through breeding, wherein the ZmCCD8 gene has a nucleotide sequence as shown in SEQ ID NO: 1. Claims 3 and 4 require wherein overexpressing the ZmCCD8 gene in the maize plants increases the iron content in ear leaves (claim 3), and wherein overexpressing the ZmCCD8 gene in the maize plants increases the iron content in kernels per ear (claim 4). As stated above, Lu teaches in order to improve the expression of heterologous proteins in maize for recombinant protein expression platforms, a strong constitutive promoter is often used, e.g. CaMV 35S (p. 8, ¶3). The instant specification provides evidence that constitutive expression of SEQ ID NO: 1 under the 35S promoter (¶0054) increases iron content in the ear leaves and kernels of the ZmCCD8 overexpression lines is significantly higher than in the wild-type line (¶0058, FIGs. 6 and 7). Because it would be obvious to express ZmCCD8 in a plant expression system as taught by Stewart ,and specifically a maize plant using the 35S promoter as taught by Lu, the claimed steps would produce a plant that is structurally identical to the plant that is obvious in view of Stewart, Lu, and Kang, and would reasonably be interpreted to be capable of the same recited function.
Response to Arguments
Applicant argues beginning on p. 10 of remarks dated 05/27/2026 the
following arguments:
Claims 1-6 stand rejected under 35 U.S.C. 103 as allegedly being unpatentable over Stewart in view of Lu and Kang. Applicant respectfully traverses the rejection.
Independent claim 1 recites, as amended, in relevant part,
"overexpressing a ZmCCD8 gene in maize plants through breeding."
Independent claim 6 recites, in relevant part, "overexpressing a ZmCCD8 gene in maize plants" and "obtaining a maize inbred line overexpressing the ZmCCD8 gene".
Applicant respectfully submits that Stewart, Lu, and Kang, either alone or in combination, do not disclose the above features of claims 1 and 6.
The Office has acknowledged that Stewart does not disclose "overexpressing a ZmCCD8 gene in maize plants through breeding" in amended claim 1 and "overexpressing a ZmCCD8 gene in maize plants" and "obtaining a maize inbred line overexpressing the ZmCCD8 gene" in claim 6. Office Action, page 7.
Applicant respectfully submits that Lu and Kang do not remedy the
deficiencies of Stewart set forth above with respect to the amended claim 1.
Lu relates to protein production, focusing on the advantages of transgenic maize in large-scale protein production. Specifically, Lu teaches the expression of several proteins with industrial or reagent-based applications in maize. Lu is unrelated to the distinguishing technical feature of "overexpressing a ZmCCD8 gene in maize plants through breeding " in amended claim 1 and "overexpressing a ZmCCD8 gene in maize plants" and "obtaining a maize inbred line overexpressing the ZmCCD8 gene" in claim 6. Moreover, the technology taught by Lu has no connection whatsoever to the iron content of maize. Therefore, Lu does not disclose or teach "overexpressing a ZmCCD8 gene in maize plants through breeding" as recited in amended claim 1 and "overexpressing a ZmCCD8 gene in maize plants" and "obtaining a maize inbred line overexpressing the ZmCCD8 gene" recited in claim 6.
Therefore, Lu provides no teaching or motivation to combine with respect to the distinguishing feature as recited in amended claim 1 and claim 6.
Kang is directed to an improved Agrobacterium-mediated transformation and genome-editing method for maize inbred B104 using a ternary vector system and immature embryos, focusing on improving the expression of heterologous proteins in maize through transformation and genome-editing. Kang does not involve a breeding method for incorporating high iron content as a genetic trait of maize varieties. Kang teaches that "the transformed line should be self-pollinated or cross-pollinated for subsequent generation testing and analysis", however, this disclosure of Kang is directed only to testing and analysis of whether the expression level of a heterologous protein in maize is improved, not to whether the iron content of maize is improved. In addition, the transformed lines obtained in Kang are not maize inbred lines overexpressing the ZmCCD8 gene. Consequently, Kang does not disclose or teach "overexpressing a ZmCCD8 gene in maize plants through breeding" as recited in amended claim 1 and "overexpressing a ZmCCD8 gene in maize plants" and "obtaining a maize inbred line overexpressing the ZmCCD8 gene" recited in claim 6. Kang likewise provides no teaching or motivation to combine with respect to the features of "overexpressing a ZmCCD8 gene in maize plants through breeding" as recited in amended claim 1 and "overexpressing a ZmCCD8 gene in maize plants" and "obtaining a maize inbred line overexpressing the ZmCCD8 gene" recited in claim 6.
Therefore, Stewart, Lu, and Kang, either alone or in combination, do not disclose "overexpressing a ZmCCD8 gene in maize plants through breeding" recited in amended claim 1 and "overexpressing a ZmCCD8 gene in maize plants" and "obtaining a maize inbred line overexpressing the ZmCCD8 gene" recited in claim 6.
This argument has been fully considered and is found not persuasive for
the following reason(s):
Stewart teaches overexpressing the identical ZmCCD8 nucleotide/ encoded protein sequence in a plant expression system. Because of this teaching by Stewart, one of ordinary skill would be motivated to look for and select a plant species and line/ cultivar/ variety to be the plant expression system referenced by Stewart. Lu provides clear motivation as to why one of ordinary skill in the art would select maize as the plant expression system to use to perform the invention of Stewart, which is that transgenic maize has been deployed as a cost effective platform for expression of recombinant proteins on an agricultural scale (p. 3, ¶1) and teaches several proteins with industrial or reagent-based applications have been expressed in maize due to the competitive opportunity for large-scale protein production (Table 1.2), and further elaborates on various advantages of using maize as a plant based platform for protein production (p. 8, ¶2). In addition to selecting maize for the ZmCCD8 protein production, one of ordinary skill in the art would look for a specific line/ variety/ cultivar to use for the transformation process. In doing so, one of ordinary skill in the art would find motivation to select the B104 inbred line because Kang teaches maize inbred line B104 is a public and transformable inbred maize line and has been widely used in recent years for genome editing and bioengineering (abstract). Additionally, Kang provides other motivations to use 35S promoter and also to breed the maize (p. 8, ¶3, and p. 1, section titled T0 Seed Production). Through these secondary references, one of ordinary skill in the art would find clear motivation to overexpress ZmCCD8 specifically in maize and breed the plants to test them and also for other obvious reasons such as to obtain more of the transgenic seed, thus “overexpressing a ZmCCD8 gene in maize plants through breeding” and “overexpressing a ZmCCD8 gene in maize plants; and obtaining a maize inbred line overexpressing the ZmCCD8 gene”. Because these are the only required steps in the method claims and these steps are obvious in view of the teachings of Stewart, Lu, and Kang, the claims remain rejected under 35 USC 103. The remaining limitations are obvious either because they do not limit the claim since they are merely intended uses or would be obvious as a function of inherency (see 103 rejection above).
Applicant argues beginning on p. 13 of remarks dated 05/27/2026 the
following arguments:
Importantly, Applicant would like to emphasize that the purpose of amended claim 1 and claim 6 is to obtain an overexpressing ZmCCD8 gene variety/line that possesses a stably heritable trait of high iron content and can be continuously cultivated.
According to claim 1 of Stewart, it can be seen that the ZmCCD8 of Stewart is used for aldehyde production, flavor, and carotenoid cleavage. Thus, Stewart does not address the relationship between ZmCCD8 and iron content, let alone the regulation of plant iron homeostasis.
Lu and Kang also do not address the relationship between ZmCCD8 and iron content, let alone the regulation of plant iron homeostasis. Therefore, even if a person skilled in the art were to combine Stewart with Lu and Kang, it would be difficult for the person skilled in the art to foresee the technical effect achievable by the present application. Furthermore, high iron content and its stable maintenance in plant progeny achieved by the plant line overexpressing ZmCCD8 obtained through breeding are not inherent characteristics naturally possessed by plants. In summary, increasing the iron content in maize leaves and/or maize kernels through overexpression of the ZmCCD8 gene, and obtains a maize line with this characteristic, thereby achieving an unexpected technical effect.
It is well settled that establishing a prima facie case of obviousness requires that all claim limitations recited in a claim must be taught or suggested by the prior art. MPEP § 2143.03. Clearly, the cited references, Stewart, Lu, and Kang, do not pass this muster. Accordingly, a prima facie case of obviousness cannot be established, and thus, amended claim 1 and claim 6 are patentable under 35 U.S.C. 103 over Stewart, Lu, and Kang.
Claims 2-4 depend on independent amended claim 1, and thus also are patentable under 35 U.S.C. 103 for at least the same reasons as stated above with respect to their base claim, and for the additional features recited therein.
Independent claim 5 recites similar features as claim 1, and thus, is also patentable for at least the reasons set forth above with respect to claim 1, and for the additional features cited therein.
Therefore, Applicant respectfully requests that the Office reconsider and withdraw the rejections of claims 1-6 under 35 U.S.C. 103 over Stewart, Lu, and Kang.
This argument has been fully considered and is found not persuasive for
the following reason(s):
The steps of the method claim are obvious in view of Stewart, Lu, and Kang regardless of the purpose/ intended use of the method. The intended use as recited in the claim(s) does/do not limit the method which is obvious in view of the prior art. Although the purpose of the method is different that argued herein, as stated in the 103 rejection and the response to the argument above there is clear motivation to combine the teachings and arrive at the instantly claimed method(s) (see 103 rejection and above).
Conclusion and Inquiries
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA N STOCKDALE whose telephone number is (703)756-5395. The examiner can normally be reached M-F 8:30-5:00 CT.
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JESSICA N. STOCKDALE
Examiner
Art Unit 1663
/JESSICA NICOLE STOCKDALE/Examiner, Art Unit 1663
/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
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